University of Georgia Athletic Ass'n v. Laite
| Decision Date | 08 April 1985 |
| Docket Number | No. 84-8179,84-8179 |
| Parties | , 23 Ed. Law Rep. 858 UNIVERSITY OF GEORGIA ATHLETIC ASSOCIATION, etc., Plaintiff-Appellee, v. Bill LAITE, individually and d/b/a Bill Laite Distributing Co., Defendant-Appellant. |
| Court | U.S. Court of Appeals — Eleventh Circuit |
William H. Major, Atlanta, Ga., Lamar W. Sizemore, Jr., Macon, Ga., for defendant-appellant.
Nickolas P. Chilivis, Kenneth G. Menedez, Atlanta, Ga., for plaintiff-appellee.
Appeal from the United States District Court for the Middle District of Georgia.
Before KRAVITCH and ANDERSON, Circuit Judges, and ATKINS *, District Judge.
In the fall of 1982, when the fancy of Georgia sports fans turned to thoughts of college football, Bill Laite Distributing Co. ("Laite"), a Macon, Georgia wholesaler of novelty beers, began marketing "Battlin' Bulldog Beer." The beer was sold in red-and-black cans bearing the portrayal of an English bulldog wearing a red sweater emblazoned with a black "G." The bulldog had bloodshot eyes, a football tucked under its right "arm," and a frothy beer stein in its left "hand."
Laite hoped that the "Battlin' Bulldog" would pile up yardage and score big points in the always-competitive alcoholic beverage market. Unfortunately, however, the pug-faced pooch was thrown for a loss by the University of Georgia Athletic Association, Inc. ("UGAA"), which obtained preliminary and permanent injunctive relief in federal district court based on the "likelihood of confusion" between the "Battlin' Bulldog" and the "University of Georgia Bulldog." Laite now cries "foul," arguing that (1) the "University of Georgia Bulldog" is not a valid trade or service mark worthy of protection, (2) the district court used the wrong factors in comparing the "Battlin' Bulldog" with the "University of Georgia Bulldog," and (3) the court's conclusion that the sale of "Battlin' Bulldog Beer" created a "likelihood of confusion" is clearly erroneous. After viewing a "replay" of the proceedings below, we conclude that no error was committed and affirm the judgment of the district court in all respects.
The University of Georgia's athletic teams have long used the nickname, "Bulldogs." 1 In 1981, UGAA registered with the State of Georgia certain service marks incorporating the word "bulldog" or the portrayal of an English bulldog. One such service mark depicts an English bulldog wearing a sweater with a "G" emblazoned on it. See Office of Secretary of State, State of Georgia, Service Mark, File Reference No. S-4673 (). Another service mark depicts the word "BULLDOGS" in projecting block letters. See id. at No. S-4667 (). These marks were registered for use in connection with "services related to sports activities." UGAA also applied for federal registration of the marks. 2 Similar unregistered trade and service marks have been used by UGAA in connection with the University of Georgia's athletic teams. The university's colors are red and black.
In October, 1982, Laite began distributing the red-and-black cans of "Battlin' Bulldog Beer" to stores in the Atlanta area and throughout Georgia. One side of the cans contained the portrayal of an English bulldog described earlier. The opposite side of the cans contained the words, "BATTLIN' BULLDOG BEER" (in prominent red block letters), and, "Not associated with the University of Georgia" (in small silver print). Laite previously had sought permission from UGAA to use an exact reproduction of the "University of Georgia Bulldog" on the cans, but such permission had been denied.
Upon learning of the appearance of "Battlin' Bulldog Beer" on the market, 3 UGAA informed Laite that it believed the cans infringed its registered and unregistered marks, and demanded that Laite cease distributing the beer. When Laite refused, UGAA filed suit against Laite in the United States District Court for the Middle District of Georgia. UGAA sought actual and punitive damages, an accounting of Laite's profits from the sale of the beer, a declaration that Laite's use of UGAA's marks was unlawful, an injunction against further misuse of UGAA's marks, and costs and attorney's fees. The suit was based on five legal theories: (1) false designation of origin in violation of section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a); 4 (2) trademark infringement in violation of Ga.Code Ann. Sec. 10-1-450; 5 (3) deceptive trade practice in violation of the Uniform Deceptive Trade Practices Act, Ga.Code Ann. Secs. 10-1-370 to -375; 6 (4) dilution of UGAA's marks in violation of the Georgia Anti-Dilution Statute, Ga.Code Ann. Sec. 10-1-451(b); 7 and (5) unfair competition in violation of Ga.Code Ann. Sec. 23-2-55. 8
UGAA moved for a preliminary injunction to prevent Laite from producing, distributing, or selling "Battlin' Bulldog Beer." After a hearing, the district court granted UGAA's motion, concluding that UGAA was likely to prevail on its Lanham Act claim and that the remaining conditions for preliminary injunctive relief were met. 9
Meanwhile, Laite filed an answer to UGAA's complaint and requested a jury trial. At a pre-trial conference, counsel for both parties agreed to limit the evidence at trial to the transcript of the preliminary injunction hearing, the exhibits presented at that hearing, and supplementary documents to be submitted by the parties. 10 UGAA subsequently informed the district court that, if the court determined that Laite was entitled to a jury trial because of the presence of both legal and equitable claims in the complaint, UGAA would voluntarily dismiss the legal claims. The district court entered an order (1) ruling that Laite was entitled to a jury trial, (2) voluntarily dismissing UGAA's legal claims, (3) permanently enjoining Laite from marketing or distributing "Battlin' Bulldog Beer" under the challenged label design, and (4) awarding costs to UGAA, but denying UGAA's request for attorney's fees. The district court entered final judgment on the order.
Laite then moved to alter or amend the district court's order and judgment, or in the alternative for a new trial, on the grounds that the parties had reserved the right to submit additional evidence in support of their respective positions. The district court took additional evidence from both parties, and, after reviewing the additional evidence, entered an order (1) granting Laite's motion to alter or amend the order and judgment for the purpose of including the additional evidence in the record, but (2) otherwise denying Laite's motion. This appeal ensued.
We kick off our discussion by noting that the district court, in granting preliminary injunctive relief to UGAA, discussed only the Lanham Act claim and did not mention the claims arising under Georgia law. In the final order granting UGAA's request for a permanent injunction, the district court stated:
With respect to the claim for permanent injunctive relief, the court is convinced that its preliminary injunctive order dated October 22, 1982, was in all respects correct under the facts established at the preliminary injunction hearing, i.e., that the label design at issue tends falsely to describe or represent the origin of the product at issue to the detriment of plaintiff. The findings of fact in that order are adopted here. It is therefore this court's conclusion of law, and it is hereby ORDERED and ADJUDGED, that the defendant be PERMANENTLY ENJOINED from marketing or distributing Battlin' Bulldog Beer under the label design adopted by defendant which was the subject of this action.
Again, the district court did not mention the state law claims. On appeal, therefore, we are limited to determining whether the district court's decision was proper under section 43(a) of the Lanham Act. 11
Laite's first argument on appeal is that the "University of Georgia Bulldog" is not a valid trade or service mark worthy of protection. 12 Laite cites Universal City Studios, Inc. v. Nintendo Co., 578 F.Supp. 911 (S.D.N.Y.1983), aff'd on other grounds, 746 F.2d 112 (2d Cir.1984), for the proposition that "[t]o make a successful claim of false designation of origin in violation of Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), [plaintiff] must demonstrate that its trademark possesses 'secondary meaning'--'[t]he power of a name or other configuration to symbolize a particular business, product or company....' " Id. at 923 (citations omitted). Laite contends that the record does not contain sufficient proof of secondary meaning, and that the vagueness of UGAA's mark, coupled with extensive third-party uses of the same or similar marks, demonstrates the absence of secondary meaning.
The threshold question, however, is whether Universal City Studios accurately states the law of this circuit concerning the need for proof of secondary meaning under section 43(a) of the Lanham Act. We conclude that it does not. The general rule in this circuit is that proof of secondary meaning is required only when protection is sought for descriptive marks, as opposed to arbitrary or suggestive marks. We have long recognized that:
Service marks fall into four categories. A strong mark is usually fictitious, arbitrary or fanciful and is generally inherently distinctive. It is afforded the widest ambit of protection.... A descriptive mark tells something about the product; it is protected only when secondary meaning is shown.... In contrast to the above is the suggestive mark, which subtly connotes something about the service or product. Although less distinctive than a fictitious, arbitrary or fanciful mark and therefore a comparatively weak mark, a suggestive mark will be protected without...
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